The Ripple Effect of Seventh Amendment Decisions on the Development of Substantive Patent Law

Outline Introduction I. Seventh Amendment Decisions and the Law of Claim Construction A. The Supreme Court's Seventh Amendment Decision in Markman B. The Federal Circuit's Perpetuation of Claim Construction as Purely an Issue of Law C. Confusion in the Substantive Law of Claim Construction Resulting from the Federal Circuit's Flawed Approach to Seventh Amendment Issues 1. The Use of Dictionaries 2. The Use of Expert Testimony and Expert Evidence 3. The Perspective of One of Ordinary Skill in the Art II. Seventh Amendment Decisions and the Doctrine of Equivalents A. The Federal Circuit's Infringement Approach to the Doctrine of Equivalents as Purely an Issue of Fact B. The Supreme Court's Failure to Resolve Seventh Amendment Issues Regarding the Doctrine of Equivalents in Warner-Jenkinson C. Confusion and Tension in the Substantive Law of the Doctrine of Equivalents Resulting from Seventh Amendment Decisions 1. Identity Crisis 2. Claim Scope and Infringement 3. Claim Scope Under the Doctrine of Equivalents Versus Claim Construction III. Prosecution History Estoppel A. The Festo Decisions of the Federal Circuit and the Supreme Court B. The Federal Circuit's Push to Change the Rules for Prosecution History Estoppel to Minimize the Availability of the Doctrine of Equivalents C. Confusion and Complexity in the Substantive Law of Prosecution History Estoppel as a Ripple Effect of Seventh Amendment Decisions Conclusion

INTRODUCTION

Most people would agree that the best way to treat a sick patient is to diagnose the underlying cause of the illness and treat the root cause rather than the symptoms. This approach to treating patients is generally applicable to solving problems. It is usually more effective to identify and address the root causes of a problem than to deal individually with all of the ramifications of the problem. Of course, the key to success under this approach is the accuracy of the diagnosis.

In patent law, there are a number of problem areas that have raised serious concern in recent years. Those involved in science, industry and business have sounded an alarm over the failures of the patent system to provide a realistic incentive for innovation. (1) There is a growing concern that the balance between providing an incentive for innovation through patent protection, on the one hand, and the need to give the public fair notice of patent coverage in order to allow individuals and businesses to make reliable decisions, on the other hand, is out of kilter. (2) Since 2005 there have been repeated attempts in Congress to pass patent reform legislation without success. (3) Prominent critics warn that the patent system is broken. (4)

In particular, the law related to the scope of patent coverage, including claim construction, the doctrine of equivalents, and prosecution history estoppel, is considered to be in dire straits. Patent claims generally define patent rights (5) and the law regarding the proper interpretation of patent claims has been frequently criticized as being, at best, confusing and, at worst, contradictory. (6) The reversal rates for trial court claim construction decisions are high, (7) and this is considered by many to reflect a lack of clarity in the law of claim construction. (8) Moreover, the doctrine of equivalents, a legal theory under which the scope of patent coverage may encompass more than the literal breadth of patent claims as far as the right to exclude is concerned, (9) has been attacked as lacking a cohesive foundation. (10) The very existence of the doctrine of equivalents has been challenged before the united States Supreme Court (11) and despite being upheld (12) is still questioned by some critics who would like to abolish it in its current form (13) or limit its reach. …

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